Mace Defense Service, Inc. v. Kazuhiro Kawashima
Claim Number: FA0509000555041
Complainant is Mace Defense Service, Inc. (“Complainant”), represented by Mark Y. Cowan, of L+ Systems Design, Muromi 1-20-1, 103, Sawara-Ku, Fukuoka-City, 814-0015, Japan. Respondent is Kazuhiro Kawashima (“Respondent”), 209 E. Pomona Bl., M.P. 91775, California, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mds-japan.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 14, 2005.
On September 11, 2005, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <mds-japan.com> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 20, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 10, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@mds-japan.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 17, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mds-japan.com> domain name is identical to Complainant’s MDS logo.
2. Respondent does not have any rights or legitimate interests in the <mds-japan.com> domain name.
3. Respondent registered and used the <mds-japan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mace Defense Service, Inc. (Japan), sells self-defense products. Complainant has permission from Mace Defense Service, USA to use the MDS logo and Mace Defense Service name. Complainant uses the MDS logo on its advertising copy and promotional materials. Complainant and its employees identify themselves as MDS Japan because, when translated into Japanese, customers often misunderstand the phrase “Mace Defense Services Japan.” The disputed domain name resolves to a company website that offered, inter alia, advice for customers injured by Complainant’s self-defense products
Complainant was the prior registrant of the <mds-japan.com> domain name. Mr. Shigeru Koguchi, a former employee of Complainant, had control of the domain name registration. Upon his dismissal on August 3, 2005, Mr. Koguchi, instead of surrendering the domain name registration to Complainant, transferred the registration to Respondent, Kazuhiro Kawashima. On July 21, 2005, Respondent transferred the domain name registration to another registrar—MelbournIT.
Respondent is using the <mds-japan.com> domain name to operate a website that claims that Complainant is using counterfeit products and accuses Complainant’s President of being connected to organized crime, right-wing groups, or religious cults in Japan. It also states that Complainant intends to use its customers’ information for criminal purposes.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has not established Policy
¶ 4(a)(i). The Policy requires the
complainant to demonstrate that the respondent’s domain name is identical or
confusingly similar to the complainant’s trademark. Here, Complainant has only asserted that it has a logo, belonging
to another entity, for which it has permission to use. Complainant does not discuss whether the
logo is an indicator of source. It
does not include any evidence (such as trademark registrations or licensing
agreements) that demonstrates that the parent company regards or controls the
logo as a mark. Complainant does not
even use the words “mark,” “trademark,” or “service mark” except as it is used
in the complaint template. The Panel finds
that Complainant has not established rights in a relevant trademark and, therefore,
cannot avail itself of the Policy regarding the <mds-japan.com>
domain name pursuant to Policy ¶ 4(a)(i).
See Powrachute Inc. v. Buckeye Indus., AF-0076 (e-Resolution, May
30, 2000) (dismissing a complaint where the complainant failed to contend, provide
evidence, or give arguments to the effect that it had either a registered
trademark or service mark in POWRACHUTE or any similar name, or that it had a
common law trademark in the name); see also Weatherford Int’l, Inc. v. Wells,
FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that “simply operating under
a business name does not, per se, constitute secondary source
identification sufficient to warrant a finding of common law rights in the
WELLSERV mark”).
The Policy requires that a complainant establish all
three prongs of the Policy to succeed.
Because Complainant has not established Policy ¶ 4(a)(i), the Panel
chooses not to go further with its analysis.
See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat.
Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all
three elements under the Policy, the complainant’s failure to prove one of the
elements makes further inquiry into the remaining element unnecessary); see also CyberImprints.com,
Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that,
although the the respondent’s domain name <cyberimprints.com> was
identical to the complainant’s incorporated business name, the complainant did
not claim to hold any trademark or service mark rights in CYBERIMPRINTS or
CYBERIMPRINTS.COM, and therefore, its request for transfer was denied).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
John J. Upchurch, Panelist
Dated: October 31, 2005
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